Tuesday, April 22, 2014

The Board affirmed a Section 2(e)(1) refusal to register the mark TOURBILLON & Design (shown below), finding it to be merely descriptive of "jewellery, horological and chronometric instruments." There was no doubt that the word TOURBILLON is descriptive of a feature or component of horological or chronometric instruments, but applicant Swatch maintained, without success, that the word does not describe jewelry, and further that the design portion of the mark is distinctive. In re The Swatch Group Management Services AG, 110 USPQ2d 1751 (TTAB 2014) [precedential].

Swatch stated in its application that the mark "consists of the term ‘TOURBILLON’ below a design of a 'tourbillon,'" and it disclaimed any exclusive right in TOURBILLON for horological and chronometric instruments (but not for jewelry). As described in Wikipedia:

In horology, a tourbillon ... is an addition to the mechanics of a watch escapement. Developed around 1795 by the French-Swiss watchmaker Abraham-Louis Breguet from an earlier idea by the English chronometer maker John Arnold a tourbillon aims to counter the effects of gravity by mounting the escapement and balance wheel in a rotating cage, to negate the effect of gravity when the timepiece (and thus the escapement) is stuck in a certain position.

The Board concluded that the word TOURBILLON is merely descriptive of jewelry because, the evidence showed, the category of "jewelry" includes watches. The fact that this reading of the term "jewelry" results in some redundancy in the identification of goods was of no concern, because "redundancy in identification does not limit or otherwise adversely affect the evidentiary value of a registration certificate."

As to the design element of the mark, the Board noted that a design that comprises merely an illustration of a product is unregistrable under Section 2(e)(1), just as merely descriptive wording would be. Examining Attorney Melissa Vallillo maintained that the design element (which Swatch described as a tourbillon) "is the legal equivalent of the wording TOURBILLON," and that "the design element in the mark features various parts commonly found in a tourbillon, with such parts appearing as they would in a tourbillon."

Wikipedia photograph

Swatch argued that the depiction in its mark is not an exact representation of its extremely intricate escapement, but rather is an abstract, highly stylized version. The Board, however, pointed out that the question is whether the design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary, or suggestive matter. "The fact that applicant’s design is not completely accurate, realistic or true-to-life does not exempt it from a finding of mere descriptiveness." Although the record showed "many subtle variations in the basic design of the device, it is clear that the design in applicant’s mark depicts a tourbillon and would be easily recognized as such."

third-party tourbillon

Considering the applied-for mark as a whole, the Board found that the combination of the design with the word TOURBILLON "reinforces the singular impression conveyed by the mark as a whole, which is nothing more than the significance of 'tourbillon.'"

TTABlog note: Maybe Swatch should rely on copyright to protect the design element of its applied-for mark. Or maybe it should file an application to register the mark for "jewelry, not including horological and chronometric instruments."